[Pct] Change of applicant in PCT application --> effect on Paris Art. 4 right of priority

[Rick Neifeld]

Ben - Why do you think it is "not possible to change the applicant once a
provisional patent application ha[s] [sic] expired"? 37 CFR 1.76(c)(1)
contains no such limitation.

"How would one go about changing the applicant for an expired provisional?"
- I would review the relevant rules, file a suitable 1.76(c)(2) correction,
and inquire with the office of petitions, ebc, and the application
assistance unit to see about PTO processing of the correction. I think no
petition is required, but I would have to check.  In any case, you can
expedite processing by petitioning for expedited processing; the PTO always
likes it when people file petition fees to speed things along. Good luck.






On Wed, Feb 26, 2025 at 7:52 PM Benjamin Keim <ben at newportip.com> wrote:

> Hi Rick,
>
>
>
> Thank you for the useful information. You mention correcting both the
> provisional patent application and the PCT application by naming both the
> university and the company as applicants. However, I understand that is not
> possible to change the applicant once a provisional patent application had
> expired. How would one go about changing the applicant for an expired
> provisional?
>
>
>
> -Ben
>
>
>
> *From:* Rick Neifeld <richardneifeld at gmail.com>
> *Sent:* Wednesday, February 26, 2025 3:16 PM
> *To:* For users of the PCT and ePCT. This is not for laypersons to seek
> legal advice. <pct at oppedahl-lists.com>
> *Cc:* Benjamin Keim <ben at newportip.com>
> *Subject:* Re: [Pct] Change of applicant in PCT application --> effect on
> Paris Art. 4 right of priority
>
>
>
> Ben - The existing priority case law is covered in my book, Law Regarding
> Patents.
>
> You said " the provisional application from which the PCT claims priority
> has only Company A as the applicant. " .
>
> You said "I did not know this when originally working on the applications
> and so filed in the name of Company A."  I take that to mean you filed both
> the provisional and the PCT application naming company A as the applicant.
>
>
>
>
>
>
>
> "My client and a university did joint research. Their research agreement
> says the parties shall jointly hold title to all inventions."  - This
> "shall jointly hold title to all inventions." does not use present tense
> assignment language, a la Federal Circuit "automatic assignment" law.  That
> sounds like an equittable title agreement, not an assignment. UK courts
> have spoken to whether the Paris right of priority accrues to
> equitable title.  EPO has refused parol evidence to discount a person named
> as an Applicant in a priority application. The EPO concluded that a Paris
> article 4's "any person" referred to the named applicant of a US
> provisional application, regardless whether the named applicant had the
> legal right to effect the provisional application filing.
>
>
>
> The EPO and UK legal conclusions are arguably inconsistent.  At least
> their reasoning regarding parol evidence is at odds.
>
>
>
>  "I would prefer just to keep everything in the name of Company A and let
> them work out a license." - A license would be contrary to the existence of
> an equitable title.
>
>
>
>  "I believe I can change the applicant in the PCT application from Company
> A to Company A + University B with a rule 92bis request. " - Noted.
>
>
>
> "The research agreement should provide evidence of joint ownership." - The
> research agreement provides evidence of equitable title.  Rule 92bis.1 does
> not require proof of ownership of a newly named applicant to effect a
> change adding the newly named applicant as such.
>
>
>
> You did not mention the option that aligns the rights with the facts,
> which would be to correct both the provisional application and the PCT
> application by naming both the university and the company as applicants.
>
>
>
> As to your proposal to add the university as an applicant only to the PCT
> application, See Schaeffler Technologies GmbH & Co. KG v. Porsche AG, T
> 1933/12 (EPO Board 2/21/2014) ("As far as the board is concerned, Article
> 87 (1) EPC does not preclude the (individual) applicant for the first
> application from sharing his right of priority with a third party by filing
> an application claiming priority with him," as  translated from German.)
>
>
>
>
>
>
>
>
>
>
>
>
>
>
>
> On Wed, Feb 26, 2025 at 5:23 PM Benjamin Keim via Pct <
> pct at oppedahl-lists.com> wrote:
>
> I am trying to determine if the applicant can be changed in a pending PCT
> application without causing a problem with a priority claim to a
> provisional. I would like the answer to be "no" to keep things simple.
>
>
>
> My client and a university did joint research. Their research agreement
> says the parties shall jointly hold title to all inventions. (I have
> counseled my client about the problems of joint ownership for US patents.)
> The research agreement is dated before filing of the provisional
> application.
>
>
>
> I did not know this when originally working on the applications and so
> filed in the name of Company A. I would prefer just to keep everything in
> the name of Company A and let them work out a license. However, the
> university may wish to change the applicant on the PCT to also include them.
>
>
>
> I believe I can change the applicant in the PCT application from Company A
> to Company A + University B with a rule 92bis request. The research
> agreement should provide evidence of joint ownership.
>
>
>
> However, the provisional application from which the PCT claims priority
> has only Company A as the applicant. If I change the applicant on the PCT
> application, it would no longer be the same as on the provisional. Company
> A ≠ Company A + University B. This would create a SAOSIT problem between
> the provisional and the PCT application. *Can this be addressed?*
>
>
>
> I thought this might be something that can be handled with declaration 3.
> But the PCT application has passed the 4/16 date and published. The
> 30-month date is in April. Even if a declaration could be filed, I am not
> sure what I would say. Something like:
>
>
>
> The provisional application was filed in the name of Company A but at the
> time of filing the provisional application this invention was actually
> owned jointly by Company A + University B. So, Company A + University B is
> the successor in title to Company A because we should have listed Company A
> + University B from the beginning.
>
>
>
> My apologies if this is a topic that has been well covered in previous
> posts.
>
>
>
> -Ben
>
>
>
>
>
> --
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>
>
>
> --
>
> Best regards
>
> Rick Neifeld, J.D., Ph.D.
>
> Neifeld IP Law PLLC
>
> 9112 Shearman Street, Fairfax VA 22032
>
> Mobile: 7034470727
>
> Email: RichardNeifeld at gmail.com;
>
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